The Supreme Court unanimously struck down a broad patent on a method for …

The Supreme Court today unanimously invalidated a broad patent covering a method for determining the proper dose of a drug used to treat autoimmune disorders, saving the medical profession from a new breed of patents on medical diagnostic tests.

The patent focused on the process of administering a class of drugs, called thiopurines, that are used to treat autoimmune disorders. Doctors adjust the dosage by measuring the concentration of a chemical called a metabolite in the patient's blood. The patent didn't cover the drugs themselves, nor any particular method for measuring metabolite levels—these were already widely used in the medical profession. Instead, the patent covered the concept that particular metabolite levels "indicate a need" to raise or lower drug dosage.

A firm called Prometheus Labs sold a thiopurine testing product, but in 2004 the Mayo Clinic decided to stop using Prometheus's product and begin selling its own competing thiopurine testing product. Prometheus sued, arguing that if a doctor used Mayo's test and then thought about the correlations described in Prometheus's patent, the doctor—and, indirectly, Mayo—would be infringing the Prometheus patent. Prometheus had its patent upheld by an appeals court.

The prospect of allowing patents on what amounts to human thought prompted a broad range of interest groups, including the ACLU, the Cato Institute (disclosure: I contributed to Cato's brief in the case), and the American Medical Association, to file briefs urging the Supreme Court to invalidate the patent. On Tuesday, the Supreme Court did so in a unanimous vote.

The courts have long held that laws of nature—like the correlation between thiopurine metabolites and appropriate drug dosages—are not, by themselves, eligible for patent protection. But the application of a law of nature to a particular problem may be patentable. Prometheus argued that the steps specified by the patent—administering the drug and measuring the level of the metabolites—were sufficient to avoid violating the rule against patenting laws of nature.

But the high court wasn't convinced. In the court's opinion, Justice Stephen Breyer wrote that the patent simply instructs doctors to "engage in well-understood, routine, conventional activity previously engaged in by scientists who work in the field."

"To transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words 'apply it,'" he wrote.

Patentability rules still unclear

The opinion focused heavily on a trio of software patent cases from the 1970s and early 1980s. In the first two of those cases, the Supreme Court struck down patents on software, holding that they were unpatentable "mathematical algorithms." In the final case, decided in 1981, the high court allowed a patent on a software-controlled rubber-curing machine, holding that the mere inclusion of a software element did not preclude an otherwise patentable rubber-curing machine from getting patent protection.

The court, Justice Breyer wrote, has "endorsed a bright-line prohibition against patenting laws of nature, mathematical formulas and the like."

Yet over time, this supposedly bright line has become increasingly dull. In some sense, computer programs are nothing more than extremely complex mathematical formulas, which suggests that software might not be eligible for patent protection at all. Yet lower courts have upheld a number of software patents, and have struggled to define exactly when a mathematical formula becomes complex enough to be eligible for patent protection.

And Tuesday's decision, like a similar 2010 ruling, failed to give lower courts much new guidance on the boundaries of what can be patented. We now know that you can't get a patent on the correlation between metabolite levels and drug dosages, just as we learned in 2010 that you can't get a patent on the concept of hedging against the risk of commodity price changes. But the narrowness of Justice Breyer's ruling means that it will provide little guidance on what can be patented in other fields.

Timothy B. Lee
Timothy covers tech policy for Ars, with a particular focus on patent and copyright law, privacy, free speech, and open government. His writing has appeared in Slate, Reason, Wired, and the New York Times. Emailtimothy.lee@arstechnica.com//Twitter@binarybits

Software that provides a solution to a problem should be patentable. Software that entertains should be copywrittable. Some software (or parts thereof) should qualify for both protections. Both protections should be updated by congress (and not the courts) to account for the unique nature of software.

Once again, though I agree with the author's sentiment, I disagree strongly with the journalistic bias. Tim, the editorializing is slaughtering the credibility of the rest of the articles on the site. If you would just throw the work "editorial" on the title there it would help a lot.

Software that provides a solution to a problem should be patentable. Software that entertains should be copywrittable. Some software (or parts thereof) should qualify for both protections. Both protections should be updated by congress (and not the courts) to account for the unique nature of software.

To an extent I agree that software should be patentable and trademarks within the software should be protected. The two problems I have with the current state of software patents is 1) they are given out too liberally without the patent examiners really understanding whether something is "obvious" or not, and 2) the protections they offer are too stringent. If the time limits were reduced and only truly innovative ideas were granted patents, I would be satisfied.

Certainly I'm more concerned with the patent system than I am with the companies abusing said system.

Once again, though I agree with the author's sentiment, I disagree strongly with the journalistic bias. Tim, the editorializing is slaughtering the credibility of the rest of the articles on the site. If you would just throw the work "editorial" on the title there it would help a lot.

Thanks for the comment. Ars has always taken this approach to our coverage. We make sure the facts we report on are accurate, but unlike some publications we don't maintain a strict separation between news and opinion. In my opinion, this practice does not "slaughter" our credibility.

While I agree with you, nevertheless I can't help but believe that software patents should be invalid. Where does one draw the line between patentable "software" and an unpatentable "mathematical algorithm"? Since software **is** a mathematical algorithm, we have to draw a line somewhere, and I'm not sure how we could possibly draw a meaningful distinction between the two.

Once again, though I agree with the author's sentiment, I disagree strongly with the journalistic bias. Tim, the editorializing is slaughtering the credibility of the rest of the articles on the site. If you would just throw the work "editorial" on the title there it would help a lot.

I don't know why Ars thinks it's opinions are so darn important or if they just think their readers aren't capable of rational thought, but god damn it's annoying to get their opinion on every damn news story they write up.

Ars has always taken this approach to our coverage. We make sure the facts we report on are accurate, but unlike some publications we don't maintain a strict separation between news and opinion. In my opinion, this practice does not "slaughter" our credibility.

Which is precisely why I always come to Ars. Thank you Tim, for sharing your opinions, they are very much worth hearing. I personally appreciate getting the all too rare and precious chance to read such a good quality discussion of a topic, to hear what a very well informed and intelligent author actually thinks about a subject. That is quite precious. Mere factoids are a dime a dozen, and can be got from any common media outlet.

Once again, though I agree with the author's sentiment, I disagree strongly with the journalistic bias. Tim, the editorializing is slaughtering the credibility of the rest of the articles on the site. If you would just throw the work "editorial" on the title there it would help a lot.

I don't know why Ars thinks it's opinions are so darn important or if they just think their readers aren't capable of rational thought, but god damn it's annoying to get their opinion on every damn news story they write up.

Be glad that the Ars opinions (bias) are clear, rather than all the organizations that pretend not to have any.

I am curious to know what editorializing Arch-Stanton is specifically objecting to. I prefer articles that have some analysis rather than just repeating a press release and a list of quotes from the interested parties, but this is one of the more balanced articles on Ars.

The most broken thing about the patent system is the public's complete lack of understanding about what patents were meant for. We are supposed to have Free Market system; patents are by definition an interference and breakage in the Free Market. Patent law spells it out in black and white that _all_ monopolies on ideas and inventions are a known evil in the free market. However, a limited exception is granted for a limited time for the sole purpose of incentivising innovation.

So the only question that matters is at what point does this trade-off between incentive and Free Markets stop being in the public interest? Or is this incentive even remotely necessary in the software field? Bill Gates argued that it wasn't until, of course, he got filthy, stinkin' rich. Do you really think Apple would _not_ still be sitting on $100 Billion in cash right now without "slide to unlock" patents and the like??

@asmoore82: I disagree. The most broken thing about the patent system is that it is relatively cheap to get one but very expensive to get rid of one, even if it is extremely illegal. This causes the patent system to grow and grow and expand into areas where it never should be. The best thing that can be done with the patent system is to get rid of it.

I prefer articles that have some analysis rather than just repeating a press release and a list of quotes from the interested parties, but this is one of the more balanced articles on Ars.

Thanks! The analysis we provide at Ars has always been what sets us apart. As Tim notes, this what we do.

We've long known that a common way to complain about our work is to label such work as "opinion" or "editorializing" or "bias" or whatever word someone can think up that connotes negativity. That's cool. We're not a straight news site. But we've never been that, so I'm afraid it's a bit like complaining that the pool is wet.

@shawnhcorey: it's still very good food for thought. Think about the kids playing a friendly game of stickball. One says "Let's see if he can hit my patented screwball." Another replies "It's no match for my patented power swing." That's a major problem. We're supposed to have an economy based on the Free Market. Simultaneously, we've all been indoctrinated to believe that patents are a given and inventors are magically immune from fair and honest competition and should just get everything handed to them even if they fail to execute in the marketplace. Gee, I wonder why our economy is failing?

shawnhcorey wrote:

The best thing that can be done with the patent system is to get rid of it.

Agreed.

Another of its intended purposes was to prevent "trade secrets" from stifling the progress of human knowledge. But in the modern Information Age with reverse engineering of all products and wikipedia, that purpose seems obsolete as well.

patents are by definition an interference and breakage in the Free Market.

That by itself is not a bad thing; there are many "interferences" in the "Free Market" that have been established because the alternative is extremely shitty.

Quote:

Do you really think Apple would _not_ still be sitting on $100 Billion in cash right now without "slide to unlock" patents and the like??

I know it's fun to bash Apple regarding patents, but learn you some history. The only reason Apple got into the patent game is because they were getting the fuck sued out of them by every other technology company whenever they released something. They finally decided "fuck it, we'll play that game too".

That by itself is not a bad thing; there are many "interferences" in the "Free Market" that have been established because the alternative is extremely shitty.

The ONLY justification for patents is that the public gets more out of the economic incentives provided than the social burden of a legal monopoly. That means that we need to keep patents on a very short leash, because they are very dangerous economic tools. Uninhibited competition with regards to the intangible is not 'extremely shitty,' and there's not much credible evidence supporting the notion that these legal monopolies ever provide a net benefit. At best, patents and copyright are a 'necessary evil.'

Software that provides a solution to a problem should be patentable. Software that entertains should be copywrittable. Some software (or parts thereof) should qualify for both protections. Both protections should be updated by congress (and not the courts) to account for the unique nature of software.

I don't think the distinction between "provides a solution" and "entertains" would hold up in practice. Surely there are algorithms that "provide a solution" to the problem of, say, where an ogre should direct its attention in a game of Quake (yes, I date myself) which is intended to entertain.

IMO, no product or process should qualify for copyright *and* patent protection. It should be an either/or issue. Note that, generally speaking, you couldn't use a patented program without a licence even if it wasn't copyrighted.

I'm generally against software patents, though the existence of some really novel and important inventions such as public key encryption make me wonder if it's a completely black and white issue. If software patents are allowed, I think that the source code for *any* patented algorithm should be available. Full disclosure (mandated in the patent application process) should not be limited to the patent filing, but should encompass any implementations offered for sale.

Once again, though I agree with the author's sentiment, I disagree strongly with the journalistic bias. Tim, the editorializing is slaughtering the credibility of the rest of the articles on the site. If you would just throw the work "editorial" on the title there it would help a lot.

Personally, I like my news with some intelligent commentary. Journalism can't be completely free of bias (someone has to decide what's newsworthy, who to interview or quote, etc), so I like my bias to be intelligent and upfront. Ars provides that.

Another of its intended purposes was to prevent "trade secrets" from stifling the progress of human knowledge. But in the modern Information Age with reverse engineering of all products and wikipedia, that purpose seems obsolete as well.

Looking at how hard the open source community has had to work to provide Linux drivers for various computer components, I don't think that reverse engineering is a panacea. I think the situation would be better (as I describe above) if patent applications had to provide *actual* implementation information in addition to high level descriptions.Edit: Now that I think of it, most computer hardware nowadays is probably covered by both patents and trade secrets. It would probably be better it that weren't the case. Arguably, if you get a patent for hardware, you should also have to submit, say, the Verilog for the products embodying that patent.

As I understand, judges are meant to only interpret existing laws, not create new ones. In this particular case, they interpreted the law in a way that invalidated a patent that had the potential to threaten the foundations of your (I'm not American) medical system. Now, let's pretend that existing law was written in such a way that it was clear this patent should be upheld. The judges foresee the damage that upholding this patent would cause to the medical system (and arguably society); as a legal issue, it seems as though they should uphold the patent. However, there would be serious ethical implications. In that case, should the judges ignore the potential societal ramifications and focus solely on the legality? I understand the "slippery slope" argument of the courts attempting to instill morality by amending their rulings, but it seems as though strict "letter of the law" interpretation could bring its own set of issues.

@asmoore82: I disagree. The most broken thing about the patent system is that it is relatively cheap to get one but very expensive to get rid of one, even if it is extremely illegal. This causes the patent system to grow and grow and expand into areas where it never should be. The best thing that can be done with the patent system is to get rid of it.

Really? I have to disagree with you. Patents are important for businesses to get the return from their investment. It is very expensive to develop new things, but it is extremely easy to copy and sell. Why should one be allowed to copy and benefit from someone's else work?

I have an example in my family where there has been a software patent dispute. My uncle has a law firm and due to their business case, decided he needed a software to improve productivity and less court time by the lawyers on the firm. He then came up with a software to solve the problem. It was a novel software at the time (about 12 years ago). He hired half a dozen coders and got them developing the software for a couple of years. He then copyrighted the software as he saw an opportunity to sell it to other law firms. After the software was done, one of the coders quit the job. A few months later, a small form was selling a similar software and guess what? The source code was similar, as the coder that quit, took a copy of the source with him, changed the overall looks, opened a small software company and was selling the software. The rest of the story is just court stuff. In the end, the guy had to pay a lot of money.

Now, there are stupid patents around and patents should be more throughfully reviewed before being granted and the legislation need some changes to prevent what is happening in the mobile market (maybe OS patents should be forced into being FRAND), but patents are important and necessary.

I'm generally against software patents, though the existence of some really novel and important inventions such as public key encryption make me wonder if it's a completely black and white issue. If software patents are allowed, I think that the source code for *any* patented algorithm should be available. Full disclosure (mandated in the patent application process) should not be limited to the patent filing, but should encompass any implementations offered for sale.

Here in Brazil, when you patent a software you must provide a copy of the source code in printed form in a sealed document to the patent office. You also need to renew your patent every other year (and provide the source again if changes are made) for the duration of the patent (which I think is about 20 years). In case you sue someone for patent infringement the sealed code will be open in court and review by experts apointed by court to check if there is infringement or not.

As I understand, judges are meant to only interpret existing laws, not create new ones. In this particular case, they interpreted the law in a way that invalidated a patent that had the potential to threaten the foundations of your (I'm not American) medical system. Now, let's pretend that existing law was written in such a way that it was clear this patent should be upheld. The judges foresee the damage that upholding this patent would cause to the medical system (and arguably society); as a legal issue, it seems as though they should uphold the patent. However, there would be serious ethical implications. In that case, should the judges ignore the potential societal ramifications and focus solely on the legality? I understand the "slippery slope" argument of the courts attempting to instill morality by amending their rulings, but it seems as though strict "letter of the law" interpretation could bring its own set of issues.

Judges must follow the law, but my understanding (and I know a lot of lawyers) is that the views and understandings the society has regarding a subject and the societal ramigications should be taken into account when giving a ruling, specially when it is given by a country's Supreme Court.

Really? I have to disagree with you. Patents are important for businesses to get the return from their investment. It is very expensive to develop new things, but it is extremely easy to copy and sell. Why should one be allowed to copy and benefit from someone's else work?

"Why should one be allowed to" is almost always the start of a stupid question. Good questions ask why someone should NOT be allowed to do something, as that tends to place the burden upon prohibition of a certain behavior. That's a core tenet of modern societies. In regards to prohibiting copying, we have accepted only one explanation: that under certain circumstances, the public gets a net benefit from granting limited term legal monopolies to authors and inventors. However, that means that copyright and patents are legitimate restrictions of freedom ONLY when they provide a net benefit.

Quote:

I have an example in my family where there has been a software patent dispute. My uncle has a law firm and due to their business case, decided he needed a software to improve productivity and less court time by the lawyers on the firm. He then came up with a software to solve the problem. It was a novel software at the time (about 12 years ago). He hired half a dozen coders and got them developing the software for a couple of years. He then patented the software as he saw an opportunity to sell it to other law firms. After the software was done, one of the coders quit the job. A few months later, a small form was selling a similar software and guess what? The source code was similar, as the coder that quit, took a copy of the source with him, changed the overall looks, opened a small software company and was selling the software. The rest of the story is just court stuff. In the end, the guy had to pay a lot of money.

That sounds like copyright infringement, and was an issue that likely could have been solved even absent copyright law via contract law. Furthermore, this is an example where legal protections wouldn't be needed. He paid for the development of that software to scratch his own itch, so there was clearly no need to provide external incentives for him to do so. The public thus got nothing out of granting him a legal monopoly, making it a poor deal for the public.

I would disagree with the suggestion that Mayo v. Prometheus doesn't give strong guidance. Courts now have a very clear road map to follow. Figure out what is inventive (e.g., the algorithm) and then figure out whether the other steps claimed in the process are novel or merely well known. If the other steps are well known then the patent is probably invalid.

The Supremes once again completely screwed up patent law. They should just stop taking patent cases because it is clear they have no clue what they are saying and have no ability to understand the implications of their actions and statements. It would have been fine to say the claims are invalid because the claim prempts the entire field of thought and thus are nothing more than an abstract idea. Patent drafters would have made sure their claims were sufficiently detailed to avoid invalidity. When you look at what the court said in greater detail, this decision is really inconsisten with prior Supreme Court precedent that says a process can be novel even if the individual steps are not. The case cites this rule and then promptly ignores it. Another terrible decision from the Supreme Court.

"Why should one be allowed to" is almost always the start of a stupid question. Good questions ask why someone should NOT be allowed to do something, as that tends to place the burden upon prohibition of a certain behavior. That's a core tenet of modern societies. In regards to prohibiting copying, we have accepted only one explanation: that under certain circumstances, the public gets a net benefit from granting limited term legal monopolies to authors and inventors. However, that means that copyright and patents are legitimate restrictions of freedom ONLY when they provide a net benefit.

Sorry, but patents are not responsible for companies acting as monopolies. If some companies act as such is because something else needs revisiting, as companies can allow others to use their patents and pay royalties, which usually are reasonably priced (i.e., FRANDs; also, 2000+ patents on h.264 that charge less than 10 cents, described in the lawsuit between Microsoft and Motorola). So far, the only company I've seen in this recent mobile patent war that is acting like a monopoly is Apple with its refusal to license their patents (but they do license to MS and vice-versa).

Quote:

That sounds like copyright infringement, and was an issue that likely could have been solved even absent copyright law via contract law. Furthermore, this is an example where legal protections wouldn't be needed. He paid for the development of that software to scratch his own itch, so there was clearly no need to provide external incentives for him to do so. The public thus got nothing out of granting him a legal monopoly, making it a poor deal for the public.

Actually, you are write. I've just reviewed our legislation, and software is not patentable, it is copyrightable. I'll fix my previous posts to reflect this. But, as a simplification, patent and copyright works the same regarding royalties and use authorisation, except that they apply to different types of work.

And, as of the example, I simplified the story a bit (and may have not expressed myself very clearly), but he developed the software because there was nothing similar available in the market at that time to solve his office issue and to sell it as well (this was a decision made early in the development process).

Here in Brazil, when you patent a software you must provide a copy of the source code in printed form in a sealed document to the patent office. You also need to renew your patent every other year (and provide the source again if changes are made) for the duration of the patent (which I think is about 20 years). In case you sue someone for patent infringement the sealed code will be open in court and review by experts apointed by court to check if there is infringement or not.

I see that later in the thread you say that in Brazil, copyright applies to software instead of patents. Is the term actually 20 years? That's unusually short for copyright.

A system of software copyright like this would be useful in the US. It might have prevented some of the worst abuses of the SCO vs IBM/Novell/etc saga. I do wonder if mandated *public* disclosure of copyrighted source code would be a good idea. After all, part of the benefit for the public from granting exclusivity (via copyright or patents) is the ability to learn from the protected work. This happens with works of art, but it is impeded with software if the source code is secret.

Sorry, but patents are not responsible for companies acting as monopolies. If some companies act as such is because something else needs revisiting, as companies can allow others to use their patents and pay royalties, which usually are reasonably priced (i.e., FRANDs; also, 2000+ patents on h.264 that charge less than 10 cents, described in the lawsuit between Microsoft and Motorola). So far, the only company I've seen in this recent mobile patent war that is acting like a monopoly is Apple with its refusal to license their patents (but they do license to MS and vice-versa).

No, I mean copyright and patents are legal monopolies. That is something different from being violation of competition law.

Quote:

Actually, you are write. I've just reviewed our legislation, and software is not patentable, it is copyrightable. I'll fix my previous posts to reflect this. But, as a simplification, patent and copyright works the same regarding royalties and use authorisation, except that they apply to different types of work.

Conflating copyright and patents too much is dangerous. They have similarities, particularly in their justification, but understanding the differences between them is important. For example, patents do not currently provide a defense for independent inventors, so if an unrelated law firm independently commissioned coincidentally similar software, they could be subject to patent infringement if the lawyer had brought a lawsuit. Also, assuming you are American, the legality of software patents is muddy. It sounds like you know virtually nothing about copyright and patent laws, let alone the practical effects various changes would have on our society.

The only defense I can see for patents is giving a creative time to make back the money that was spent in research and development before competition for pricing is enabled. If this is the popular defense of these ridiculous things... What is the popular defense of patents by the way?... then I would suggest an addendum to the patent proper that states, with receipts, how much money was put into development, and a time frame, based on potential for profiting from the intellectual property, for how long it would take to make this money back and an agreement to make public the progress in reaching this amount.

Whichever comes first: the time frame or the monetary goal reached; the patent then becomes defunct.

If the pending patent lacks either these requirements or a logical system of fulfilling these requirements, then the patent is withheld.

I see that later in the thread you say that in Brazil, copyright applies to software instead of patents. Is the term actually 20 years? That's unusually short for copyright.

A system of software copyright like this would be useful in the US. It might have prevented some of the worst abuses of the SCO vs IBM/Novell/etc saga. I do wonder if mandated *public* disclosure of copyrighted source code would be a good idea. After all, part of the benefit for the public from granting exclusivity (via copyright or patents) is the ability to learn from the protected work. This happens with works of art, but it is impeded with software if the source code is secret.

Actually, I went to read the letter of the law and the term is of 50 years. It seems that GPL and Creative Commons may be void in Brazilian law, as one cannot sell or give away their copyrights on software, but may choose not to pursue them.

@asmoore82: I disagree. The most broken thing about the patent system is that it is relatively cheap to get one but very expensive to get rid of one, even if it is extremely illegal. This causes the patent system to grow and grow and expand into areas where it never should be. The best thing that can be done with the patent system is to get rid of it.

Really? I have to disagree with you. Patents are important for businesses to get the return from their investment. It is very expensive to develop new things, but it is extremely easy to copy and sell. Why should one be allowed to copy and benefit from someone's else work?

Thanks for proving my point. See your and everyone's misunderstanding of what patents are meant to accomplish is the real problem. It has shifted the mindset of to one of de facto monopoly and everyone is too jaded to see why that is a disastrous outcome.

sviola wrote:

it is extremely easy to copy and sell

^FALSE. That is the exact moment where your argument breaks down.

The Uncle story is quite amusing...

sviola wrote:

He then came up with a software to solve the problem.

You mean he came up with the idea, not the software. You actually have to write software.

sviola wrote:

He hired half a dozen coders and got them developing the software for a couple of years.

Ahh, so he did even less than we thought. The actual coding is a far more inventive process.

sviola wrote:

He then copyrighted the software

Orly?? This was supposed to be a story about _patent_, not _copyright_.

sviola wrote:

as he saw an opportunity to sell it to other law firms.

Surely you mean _license_ it to other law firms, not _sell_.

sviola wrote:

the coder that quit, took a copy of the source with him, changed the overall looks

Sounds like a clear case of _copyright_ infringement. But this was supposed to be a story about _patent_.

So, software _patents_ must be a _good thing_ because you don't even know what they are. Gotcha

The only defense I can see for patents is giving a creative time to make back the money that was spent in research and development before competition for pricing is enabled. If this is the popular defense of these ridiculous things... What is the popular defense of patents by the way?... then I would suggest an addendum to the patent proper that states, with receipts, how much money was put into development, and a time frame, based on potential for profiting from the intellectual property, for how long it would take to make this money back and an agreement to make public the progress in reaching this amount.

Whichever comes first: the time frame or the monetary goal reached; the patent then becomes defunct.

If the pending patent lacks either these requirements or a logical system of fulfilling these requirements, then the patent is withheld.

I thought the term of the patent (20 years) was what was considered enough for a patent holder to recoup his investment and have his profit. While that may be to much for some patents, it may be too little for others. It's something hard to calculate.